medical supply
Date: 17 May 2021

War for a Word in the Time of a Crisis

Bombay High Court Rejects Cutis Biotech Plea To Prohibit Serum Institute Of India From Using The Trademark 'Covishield'
Plaintiff/Appellant Cutis BiotechSole Proprietorship concern Through its sole proprietor Archana Ashish Kabra, Age- 40, Occupation-Business,
Address- Shop No.1, Plot No.1 City Survey No.10123, 1st floor, Opp. Datta Mandir, Dayanand Nagar, New Mondha Corner, Nanded, Maharashtra- 411 602
Defendant/RespondentSerum Institute of India Pvt. Ltd. Registered Address -212 /2 off Soli, Poonawalla Road, Hadapsar, Pune, Maharashtra -411 028.
Also, at
Sarosh Bhavan, 16- B/1 Dr. Ambedkar Road, Pune Maharashtra 411 001 Through its Director Adar Cyrus Poonawalla Age- Adult, Occupation: Business Address-21/2 off Soli Poonawalla Road, Hadapsar.
The Bombay High Court (hereinafter, the Court) refused to prevent the Respondent from using the trademark ?Covishield? for its vaccine against the COVID-19 virus on the grounds:
  • the Respondent is the prior user of the trademark,
  • the Respondent has acquired enough goodwill
  • discontinuing the name would create confusion and disruption in the vaccination programme

Important Key Notes of the Case:

Initially, the pharmaceutical company "Cutis Biotech" (hereinafter, the Plaintiff) filed a Commercial suit in the Pune Court, seeking an interim injunction to ban the pharmaceutical company "Serum Institute" (hereinafter, the Respondent) from using the trademark ?Covishield?, wherein the Pune Court rejected the same. The Plaintiff filed an appeal seeking temporary injunction against the Respondent to prevent it from using the trademark ?Covishield?.

The coram dismissed the appeal holding that?Covishield is now widely known as a vaccine to counter Coronavirus.

"A temporary injunction directing Serum Institute to discontinue the use of mark ?Covishield? for its vaccine will cause confusion and disruption in the Vaccine administration programme of the State. In this case, thus, the grant of an injunction would have large scale ramifications traversing beyond the parties to the suit," the order said.

Followings are the key factors influencing the Court?s judgement:
  • The Plaintiff and the Respondent applied for registration of the trademark? Covishield?, whose applications were pending with the Trademark Office. Therefore, none of the aforementioned pharmaceutical companies have a registration for the trademark- ?Covishield?.

    Timelines Cutis Biotech, on 29 April 2020, filed an Application No. 4493681 for registration of trademark ?COVISHIELD? (?Covishield?) under Class-5 for "Veterinary, Ayurvedic, Allopathic, Medicinal and Pharmaceuticals Preparations and Vitamins and Dietary Food Supplements for Humans and Animals" Serum Institute, on 6 June 2020, applied for registration of trademark 'Covishield' under Application No. 4522244 under Class-5 for "Vaccine for human use"
  • Section 27(1) of the Trade Marks Act, 1999 explains that "no person shall be entitled to institute any proceeding to prevent or recover damages for the infringement of an unregistered trademark". However, Section 27(2) states that "the right to take action against any person for passing off his goods or services as the goods and services of the applicant and preserves the remedies to prevent passing off actions". Since the Plaintiff does not have a registered trademark, the case was adjudged based on an act of passing off.

  • In general, Passing off action is a tort to enforce rights regarding unregistered trademark, which is based on the principle of equity that prohibits people with malafide intentions from destroying his competitor's business. The law of passing off prevents unscrupulous persons from benefiting from the reputation and goodwill earned by an honest business.

  • The Plaintiff contended that there was a likelihood of confusion between their products and the Respondent?s products.

  • Further, the Plaintiff asserted that the suppliers of the Plaintiff had allegedly stopped supplying goods to them which was causing damage to them and impairing their growth.

  • The Plaintiff cited that From May 30, 2020, they have received products like antiseptic and disinfectant liquid, sanitizes, bearing brand ?Covishield?, from its manufacturers and "from May 30, 2020 to December 31, 2020 for seven months, the turnover of the Plaintiff was Rs.16 lakh and it spent Rs.1.2 lakh towards advertisements".

  • The Respondent counter-argued that the trademark ?Covishield? was coined in March 2020 itself. Further, the Respondent said that "in December 2020, the Union Ministry of Health and Family Welfare published the COVID-19 vaccine procedure which referred to the Respondent?s trademark of ?Covishield? in collaboration with an agency named AstraZeneca for Phase-II/III stage". Furthermore, the Respondent has, to date, made a sale amounting to Rs.37507 lakhs through the sale of the 'Covishield' vaccine. The Respondent has also placed on record that it has spent Rs.28 crore on the development, research and is expected to spend a further Rs.20 crore.

  • The Court rejected the argument of the Plaintiff that there was confusion between the two trademarks. "The buyer of the product ?Covishield? of Serum Institute is the Government of India,"?the Court said. The Court also rejected another argument of the Plaintiff claiming that people purchased their product thinking they are protected against COVID virus.

"After evaluating the evidence on record, we find that the Respondent had coined the word ?Covishield? and took substantial steps towards its development and manufacture. Thus, there is adequate and convincing material on record to demonstrate the prior adoption of the mark by the Respondent. There is no perversity in the finding that the Plaintiff cannot claim to be a prior user of ?Covishield?."

Further, the Court said "Not only there is adequate evidence to show prior adoption and user, but Serum Institute has also continued its user without a break. It is placed on record that Serum Institute has produced 60 million doses of the 'Covishield' vaccine per month and has supplied 48 million doses to the Government of India. Serum Institute has obtained various permissions and licenses required to manufacture the vaccine under the trademark ?Covishield?".

The Court concluded "There is one more facet to be considered to determine the balance of convenience. That 'Covishield' is a vaccine to counter Coronavirus is now widely known. A temporary injunction directing Serum Institute to discontinue the use of mark 'Covishield' for its vaccine will cause confusion and disruption in the Vaccine administration programme of the State. In this case, thus, the grant of an injunction would have large scale ramifications traversing beyond the parties to the suit".

Source: https://www.livelaw.in/pdf_upload/ordjud-2021-04-20t173725166-392190.pdf